WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION CIT Group Inc. v. Gail Nick Case No. D2009-0709 1. The Parties
Complainant is CIT Group Inc. of Livingston, New Jersey, United States of America, represented by Day Pitney LLP, United States.
Respondent is Gail Nick of Rockwall, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2009 naming as the original Respondent PrivacyP. On June 2, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. The Registrar advised the Center of the contact details for Respondent who originally had registered the disputed domain name under the Registrar's Privacy Protect service. Complainant, upon being advised of the identity of the Respondent, on June 3, 2009, filed an amended Complaint with the Center and sent a copy to the Registrar. On June 5, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 29, 2009.
The Center appointed Barbara A. Solomon as the sole panelist in this matter on July 8, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The factual background is taken from the allegations contained in the Complaint and the exhibits annexed thereto.
Complainant is a Fortune 500 bank holding company that provides a wide range of financial products and services both to corporations and to consumers. Complainant began using the CIT trademark in 1956 and adopted the business name CIT Group Holdings, Inc. in 1986. While Complainant went through several name changes and at least one reorganization it appears that since at least 1986 it has used CIT as or as part of its business name. In addition to its use of CIT as a business name, Complainant also owns several registrations for marks that include CIT alone or with other words, terms or symbols which date back to 1987.1
Complainant has advertised under the CIT mark in broadly circulated publications, on cable and network television programs, and on the Internet, although Complainant has failed to indicate how long it has advertised through these means or to provide copies of any advertisements. Complainant also has had an Internet presence since at least 1996 under the domain name and since 2000 under the name and has had in excess of 2 million recorded visitors to its website. These efforts at publicizing the mark apparently have paid off. According to a study commissioned by Complainant, Complainant has high awareness within the financial services industry. 2
After Complainant had established its CIT name, obtained registrations for marks that include CIT, and developed websites at the domain names, and , Respondent, on May 1, 2009 registered the domain name.
At the time the Complaint was filed on May 29, 2009, when a user typed in the disputed domain name, the user was taken to a website designed to appear as if it were Complainant's website. The home page stated “welcome to CIT” and referred to “Financial Inovations [sic] Personal & Business Finance.” The website had sections relating to CIT Bank Limited and offered services such as corporate finance, bank account services, cash management and real time banking. Internet users were invited to open an account online, to sign up for Internet banking, to apply for loans, to purchase a CIT guaranteed income bond, and to engage in other financial services and transactions. The website included an address purportedly for Respondent's London office but which in fact is the address of Complainant's London office. Complainant, however, has no affiliation with Respondent. According to Complainant's unrebutted evidence, Complainant has received inquiries from prospective customers as to whether there is a connection between Complainant and Respondent (although the Panel notes that copies of the inquiries were not provided).
After the transmission of the case file, the domain name first was used to point to a generic search page that appeared to be provided by the Registrar and currently points to an error message. 5. Parties' Contentions A. Complainant
Complainant makes the following contentions:
1. The CIT brand is well-known and famous, based on Complainant's registrations, use and advertising.
2. The domain name is identical or confusingly similar to Complainant's CIT trademark. Complainant notes that Respondent has incorporated in its entirety Complainant's CIT trademark and has added to it the generic terms “finance” and “service.” Complainant notes that given the fact that many of its subsidiaries incorporate the word “CIT” and variants of the word “finance” Respondent's domain name is confusingly similar to Complainant's mark.
3. Respondent has no rights or legitimate interest in the domain name because Respondent has never conducted a legitimate offline (and presumably online) business under any name that includes CIT. Complainant further contends that Respondent cannot demonstrate a legitimate interest in the domain name because there exists no relationship between Complainant and Respondent that would give rise to any right by Respondent to use or own a domain name that incorporates Complainant's CIT mark. Further, Complainant contends that Respondent is not making legitimate noncommercial or fair use of the domain name but rather is using the domain name for commercial purposes. Finally, Complainant contends that given the fact that Respondent's website deals in the same or similar services as Complainant provides, Respondent clearly was on notice of Complainant's CIT marks at the time it registered the domain name. At a minimum, according to Complainant, Respondent knew or should have known of the CIT mark by virtue of CIT's trademark registrations that were in existence before the domain name was registered and also as a result of Complainant's market presence under the CIT mark.
4. Respondent registered and is using the domain name in bad faith. Complainant points to the facts that the domain name was being used to attract for commercial gain Internet users familiar with the CIT mark; that the domain name adopted by Respondent creates initial interest confusion; that Respondent was aware of the CIT marks when it registered the domain name; that the content of the website that had been associated with the domain name falsely passes itself off as Complainant's site; and that Respondent has no authorization from Complainant to use Complainant's trademark as or in a domain name. B. Respondent
Respondent did not reply to Complainant's contentions. Accordingly, the Panel may decide the dispute based on the Complaint. All factual allegations are accepted as true, and the Panel may draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. 6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied, namely: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and used in bad faith. A. Identical or Confusingly Similar
Complainant argues that its CIT mark is famous. While no such decision is possible from the submission made by Complainant, such a determination is not necessary. Complainant owns at least seven federal trademark registrations for the mark CIT or marks that include CIT and has been using CIT as a trade name since long prior to the registration of the domain name. The only difference between Respondent's domain name and Complainant's CIT trademark is the addition of the generic words “finance” and “service.” The addition of these generic terms to Complainant's trademark does not make the domain name dissimilar to the CIT mark and business name in which Complainant has prior rights especially since those terms are descriptive of Complainant's very services. See Banca Intesa S.p.A. v. Moshe Tal,WIPO Case No. D2006-0228 (addition of generic term “online” to complainant's trademark does not create a dissimilar mark); Banco Bradesco S/A v. Gilberto Costa,WIPO Case No. D2009-0148 (noting that the adoption of a trademark in its entirety as a domain name, together with other descriptive material does not suffice to overcome an allegation that the domain name is indistinguishable from the trademark in question). Accordingly, Complainant easily satisfies the requirements of Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Based on the Complaint, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent's use of the domain name has either been to passively hold it, as is the current status or to pass itself off as Complainant by using Complainant's name on the website associated with the domain name, using Complainant's London address, and offering services that mirror those of Complainant. An attempt to pass a website off as an official website of Complainant cannot be a legitimate or fair use of the domain name. Ukrainian World Congress v. Daniel Steel,WIPO Case No. D2004-0658.
Given this evidence, it falls to Respondent to rebut Complainant's case. Respondent had ample opportunity to present evidence and failed to do so. Because Respondent has not come forward with any evidence that might show that it has rights or legitimate interests in the domain name, the Panel finds that Complainant has sustained its burden of proof on this element. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth various circumstances that can give rise to and otherwise constitute evidence of registration and use of a domain name in bad faith. Although the Policy identifies activities that constitute bad faith use and registration, the list set forth in Paragraph 4(b) of the Policy is not exhaustive. United Features Syndicate, Inc. v. Takeshi Komaba,WIPO Case No. D2002-0901.
As an initial matter, the evidence shows that the domain name was registered only after Complainant had adopted and used the CIT mark, after Complainant obtained U.S. federal trademark registrations for its CIT mark, and after Complainant had established an Internet presence under the CIT mark.
Complainant has shown that at the time it filed the Complaint, Respondent used the domain name in connection with a website used for “phishing.” Banks and other financial companies are particularly susceptible to phishing websites as a means of trying to obtain valuable information, such as credit card information, social security numbers and other personal information, from an unsuspecting public. Indeed, according to the Complaint, the website that Respondent set up under the disputed domain name invited Internet users to open accounts online or to apply for loans online, all of which required providing personal contact details. The use of a domain name to create what is essentially a fake website that is intended to mirror Complainant's website in order to extract valuable information from Complainant's customers constitutes bad faith use and registration of a domain name. See Confédération Nationale du Crédit Mutuel v. Daniel Delcore,WIPO Case No. DLC2009-0001; Banco Bradesco S/A v. Gilberto Costa, supra; Banca Intesa S.p.A. v. Moshe Tal, supra.
Further, Respondent, at least at the time Complainant filed the Complaint, was explicitly attempting to pass itself off as Complainant by not only using Complainant's marks, but also using contact information on its website that was copied from Complainant. This too constitutes bad faith. AutoScout24 Deutschland GmbH v. Mark Marchese,WIPO Case No. D2005-0777.
Certainly the combination of a domain name featuring Complainant's mark with a website that is intended to confuse consumers into believing that they have reached Complainant's website, equals bad faith use and registration of the domain name. As such, Respondent has violated Paragraph 4(b)(iv) of the Policy by creating a likelihood of confusion. Further, by creating a phishing website accessed through the use of Complainant's mark in the associated domain name Respondent has intended to disrupt the business of Complainant.
The Panel notes that as of the date the Panel was appointed, there was no website associated with the disputed domain name. However, the Panel agrees with Complainant's contention that this does not avoid a finding that the domain name was registered and used in bad faith. Indeed, if it did, then all Respondents could avoid an adverse judgment by changing their website once a Complaint was filed. Moreover, given (a) Respondent's prior use of the domain name in connection with a website used for phishing; and (b) the failure of Respondent to provide any evidence of any actual or contemplated good faith use of the disputed domain name, even though the domain name currently is not used to point to any active website the continued passive holding of the domain name, given both Respondent's past use and the potential for Respondent to re-commence use of the disputed domain name in a manner that trades on Complainant's rights, constitutes bad faith use and registration under the Policy. See Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483. Indeed, given that the overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another,” (M, LP v. Bill Zag and NWLAWS.org,WIPO Case No. D2004-0230), it is apparent that Respondent had in mind Complainant and its CIT mark when registering the disputed domain name and that the failure to transfer the domain name could lead to continued abuse by Respondent.
Accordingly, the Panel finds that Complainant has satisfied the requirements of Paragraph 4(b) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Barbara A. Solomon
Sole Panelist
Dated: July 22, 2009
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